What rights do you have when protecting your trademark internationally? You may be surprised.
The world is shrinking. Are you ready? It seems like only yesterday that the Internet changed the way that we think about commerce. In a flash the dream of a truly global economy took a giant leap forward.
No longer is a global presence reserved for the Fortune 500 and their complex channels of distribution. A small business can establish a global presence with a good product, Internet marketing, and a FedEx account.
I should know. I founded a company in my basement. A few years later it was a global leader in its industry serving thousands of customers on six of seven continents. Darn you Antarctica.
But as the barriers to global commerce have fallen complexities of global branding have taken their place. In today's global economy business needs to be nimble enough to rapidly take advantage of new markets and opportunities as they arise. All too often these fleet-footed businesses are being slowed or sabotaged by hurdles they face when attempting to use their brands on a more global scale.
In this regard, I have assembled the four most common myths about global branding that I encounter almost on a daily basis.
1. There is one global trademark.
False. The biggest myth in the global protection of brands is that there is one global trademark. There is not. The origins of this myth appear to be rooted in the U.S.'s acceptance of the Madrid Protocol Treaty a little over 20 years ago.
Prior to the U.S. joining Madrid, global protection of a U.S. brand was relatively complicated. Although the U.S. was a signatory to many lesser treaties, if you wanted to secure rights in a foreign country for the most part you had to hire a representative in that country to prosecute the application with the foreign country's own intellectual property office.
Madrid changed all of that. Under the Madrid Protocol holders of a U.S. federal trademark application or registration can extend the protection of their brands into the other member nations of the treaty. At last count there were over 85 countries who participate in the treaty including China and almost all of Europe.
But what really changed was the way trademark protection could be extended into these foreign countries. In short, not only can a U.S. application or registration be extended to these numerous countries, but the filings for said extensions can be done right through our own U.S. Patent and Trademark Office. With one stroke of a pen our own U.S. Patent and Trademark Office became a vehicle to protect our brands on a global level.
However, it is the implementation of this system and the mechanics of the same that has led to the myth of the global trademark. Here's what I mean.
When you file for the extension of protection of your U.S. trademark through the U.S. Patent and Trademark Office the request goes to a sort of trademark clearing house known as the World Intellectual Property Organization or WIPO. Provided that your request to extend the protection of your trademark is procedurally sound, WIPO issues a Certificate of International Registration.
However, it is not until the owner of the trademark requests that their protection be extended into a specific country or number of countries that it is otherwise registerable in said countries.
So in the end, the myth of the single, global trademark appears to be rooted in the International Certificate of Registration issued by WIPO in response to a properly worded request to extend the protection of a national brand to their organization. But this registration is merely part of the larger process which allows for the extension of protection into other countries. It, in and of itself, is truly of little value.
So yes there is a global or international trademark registration. But in the end it exists largely in a vacuum and until extended into specific countries offers little in terms of global protection of a brand.
2. Globalization of our trademark protection system has made it easier to obtain a trademark in the U.S.
False. Although The Madrid Protocol has vastly simplified the ability for U.S. trademark owners to extend their brands globally, ironically it has made it somewhat more difficult to protect trademarks here in the U.S. How? The system goes both ways.
Just as it is easier for us to extend our brands internationally it is also easier for existing foreign trademark owners to extend their brands into the U.S.
As such, there are now more trademarks registered with the U.S. Patent and Trademark Office than at any other time in history. And as the U.S. Patent and Trademark Office will not register trademarks that are likely to cause confusion with one another, a foreign trademark that has been extended into the U.S. under The Madrid Protocol can block the registration of a U.S. application.
Accordingly, the globalization of our trademark protection system has, in fact, made it more difficult to register a U.S. brand as a trademark in the United States.
3. You need to hire a lawyer in each country.
False (for the most part). In the olden days before The Madrid Protocol to protect your brand globally you generally required a lawyer or competent legal filing service authorized to secure trademark rights in each country in which rights were sought.
Today most can extend their brands globally through the U.S. Patent and Trademark Office without the need to hire foreign counsel whatsoever. Of course, if an application is refused by a foreign trademark office an attorney or legal representative permitted to practice before that office may need to be employed.
But for the simple process of extending protection into foreign countries where no refusals to register are issued trademark holders no longer need to hire counsel around the globe.
4. Once my trademark is registered no one can infringe upon it.
False. One of the most difficult myths to deal with is the fact that once you do extend your brand globally it does not automatically preclude others from infringing upon your trademark. This is often one of the most difficult issues for trademark holders to come to grips with after they have invested the resources to get their brand registered.
But it is a sad reality that although registering your trademarks in the U.S. and abroad affords the registrant with valuable rights one of those is not the automatic preclusion of others from using their registered trademarks.
As such, even after you protect your trademark globally you will still need to be ready to police the use of your brand in those new global markets and to take action to cease unlawful infringement when it occurs.